`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`__________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`__________
`
`
`
`
`
`LUPIN LTD. AND LUPIN PHARMACEUTICALS INC.,
`Petitioner
`
`v.
`
`HORIZON THERAPEUTICS, LLC,
`Patent Owner
`
`__________
`
`
`
`Case IPR2017-01159
`Patent 9,254,278
`
`__________
`
`
`
`PATENT OWNER’S INITIAL MANDATORY NOTICES
`
`
`
`
`
`
`Pursuant to 37 C.F.R. § 42.8(a), the Patent Owner submits the following
`
`initial mandatory notices.
`
`
`
`1.
`
`Real Parties-In-Interest (37 C.F.R. § 42.8(b)(1))
`
`U.S. Patent No. 9,254,278 is owned by Horizon Therapeutics, LLC (f/k/a
`
`Hyperion Therapeutics, Inc.), a company organized and existing under the laws of
`
`the State of Delaware, having its principal place of business at 150 S. Saunders
`
`Road, Lake Forest, IL 60045. Pursuant to the requirements of 37 C.F.R. §
`
`42.8(b)(1), the undersigned state that the real parties-in-interest are Horizon
`
`Therapeutics, LLC as well its corporate parents (collectively, Horizon):
`
` Horizon Pharma, Inc., a corporation organized and existing under the
`
`laws of the State of Delaware having its principal place of business at
`
`150 S. Saunders Road, Lake Forest, IL 60045, which is wholly owned
`
`by;
`
` Horizon Pharma Finance S.á.r.l., an entity organized and existing under
`
`the laws of Luxembourg, having its principal place of business at 19 Rue
`
`de Bitbourg, Luxembourg, which is wholly owned by;
`
` Horizon Pharma Capital Limited, a corporation organized and existing
`
`under the laws of Ireland, having its principal place of business at
`
`Connaught House, 1st Floor, 1 Burlington Road, Dublin 4, Ireland, which
`
`is wholly owned by;
`
`IPR2016-00829
`
`PO Initial Mandatory Notices
`
`Page 1 of 7
`
`
`
` Horizon Pharma Holdings Limited, a corporation organized and existing
`
`under the laws of Ireland, having its principal place of business at
`
`Connaught House, 1st Floor, 1 Burlington Road, Dublin 4, Ireland, which
`
`is wholly owned by; and
`
` Horizon Pharma plc, a corporation organized and existing under the laws
`
`of Ireland, having its principal place of business at Connaught House, 1st
`
`Floor, 1 Burlington Road, Dublin 4, Ireland.
`
`
`
`2.
`
`Related Matters (37 C.F.R. § 42.8(b)(2))
`
`The following judicial and administrative matters may affect or be affected
`
`by a decision in this proceeding:
`
`(a)
`
`IPR2015-01117, petition filed April 29, 2015, by Par Pharmaceutical,
`
`Inc., directed at U.S. Patent No. 8,642,012, which is also owned by
`
`Horizon Therapeutics, LLC and has one common inventor with the
`
`patent at issue in this case. The Board instituted trial in an institution
`
`decision dated November 4, 2015 and issued a final written decision
`
`on November 3, 2016.
`
`(b)
`
`IPR2015-01127, petition filed April 29, 2015, by Par Pharmaceutical,
`
`Inc., directed at U.S. Patent 8,404,215, which is the grandparent of the
`
`patent at issue in this case. The Board instituted trial in an institution
`
`IPR2017-01159
`
`PO Initial Mandatory Notices
`
`Page 2 of 7
`
`
`
`decision dated November 4, 2015 and issued a final written decision
`
`on September 29, 2016.
`
`(c)
`
`IPR2016-00283, directed at U.S. Patent No. 8,642,012. The petition
`
`was filed December 4, 2015 by the present Petitioners and joined with
`
`IPR2015-01117.
`
`(d)
`
`IPR2016-00284, directed at U.S. Patent 8,404,215. The petition was
`
`filed December 4, 2015 by the present Petitioners and joined with
`
`IPR2015-01127.
`
`(e)
`
`IPR2016-00829, petition filed April 1, 2016, by
`
`the present
`
`Petitioners, directed at U.S. Patent 9,095,559, which is the parent of
`
`the patent at issue in this case. The Board instituted trial in an
`
`institution decision dated September 30, 2016.
`
`(f)
`
`IPR2017-01160, petition filed on the same date as this petition, by the
`
`present Petitioners, directed at U.S. Patent 9,326,966, which is a child
`
`of the patent at issue in this case.
`
`(g) Par Pharmaceutical, Inc. v. Horizon Therapeutics, LLC, Appeal No.
`
`2017-1451 to the Federal Circuit from the Board’s Final Written
`
`Decision in IPR Nos. IPR2015-01117 and IPR2016-00283 concerning
`
`U.S. Patent No. 8,642,012.
`
`IPR2017-01159
`
`PO Initial Mandatory Notices
`
`Page 3 of 7
`
`
`
`(h) Hyperion Therapeutics Inc. v. Par Pharmaceutical, Inc., Civil Action
`
`No. 2:14-cv-00384-JRG-RSP (E.D. Tex. filed April 23, 2014). The
`
`Complaint asserts infringement of U.S. Patent Nos. 8,404,215 and
`
`8,642,012. On December 14, 2015, the district court stayed that case
`
`pending resolution of IPRs. On March 30, 2017, the district court
`
`continued the stay pending the resolution of Par’s Appeal No. 2017-
`
`1451.
`
`(i) Horizon Therapeutics Inc. v. Par Pharmaceutical Inc., Civil Action
`
`No. 1:16-cv-3910-RBK-JS (D.N.J. filed June 30, 2016). The
`
`Complaint asserts infringement of U.S. Patent Nos. 9,095,559,
`
`9,254,278; and 9,326,966.
`
`(j) Horizon Therapeutics Inc. v. Lupin Ltd. and Lupin Pharmaceuticals
`
`Inc., Civil Action No. 1:15-cv-07624-RBK-JS (D.N.J. filed Oct. 19,
`
`2015). The Complaint asserts infringement of U.S. Patent No.
`
`9,095,559.
`
`(k) Horizon Therapeutics Inc. v. Lupin Ltd. and Lupin Pharmaceuticals
`
`Inc., Civil Action No. 1:16-cv-4438-RBK-JS (D.N.J. filed Jul. 21,
`
`2016). The Complaint asserts infringement of U.S. Patent Nos.
`
`9,254,278 and 9,326,966.
`
`IPR2017-01159
`
`PO Initial Mandatory Notices
`
`Page 4 of 7
`
`
`
`(l)
`
`Pending U.S. Patent Appl. No. 15/074,625, filed March 18, 2016,
`
`which claims benefit of the patent under review.
`
`(m) Pending U.S. Patent Appl. No. 15/074,666, filed March 18, 2016,
`
`which claims benefit of the patent under review.
`
`(n)
`
`Pending U.S. Patent Appl. No. 15/074,691, filed March 18, 2016,
`
`which claims benefit of the patent under review.
`
`(o)
`
`Pending U.S. Patent Appl. No. 15/457,643, filed March 13, 2017,
`
`which claims benefit of the patent under review.
`
`3.
`
`Lead and Back-Up Counsel (37 C.F.R. § 42.8(b)(3))
`
`Pursuant to 37 C.F.R. §§ 42.8(b)(3) and 42.10(a), the Patent Owner provides
`
`the following designation of counsel:
`
`LEAD COUNSEL
`
`Robert Green (Reg. No. 27,555)
`Green, Griffith & Borg-Breen, LLP
`NBC Tower, Suite 3100
`455 North Cityfront Plaza
`Chicago, Illinois 60611
`Phone: (312) 883-8000
`Fax: (312) 883-8001
`rgreen@greengriffith.com
`
`BACKUP COUNSEL
`
`Matthew Phillips (Reg. No. 43,403)
`Laurence & Phillips IP Law LLP
`7327 SW Barnes Road #521
`Portland, Oregon 97225
`Phone: (503) 964-1129
`
`IPR2017-01159
`
`PO Initial Mandatory Notices
`
`Page 5 of 7
`
`
`
`Fax: (703) 439-1624
`mphillips@lpiplaw.com
`
`Emer Simic (Reg. No. 61,235)
`Green, Griffith & Borg-Breen, LLP
`NBC Tower, Suite 3100
`455 North Cityfront Plaza
`Chicago, Illinois 60611
`Phone: (312) 883-8000
`Fax: (312) 883-8001
`esimic@greengriffith.com
`
`Dennis Bennett (Reg. No. 34,547)
`GLOBAL PATENT GROUP, LLC
`1005 N. Warson Road, Suite 404
`St. Louis, Missouri 63132
`Phone: (314) 812-8018
`Fax: (314) 685-2300
`dennisbennett@globalpatentgroup.com
`
`
`
`Pursuant to 37 C.F.R. § 42.10(b), a power of attorney for the above-listed
`
`counsel is concurrently filed.
`
`4.
`
`Service Information (37 C.F.R. § 42.8(b)(4))
`
`Service information for the Patent Owner’s counsel of record is provided
`
`above, all of whom consent to service by e-mail. If service by means other than
`
`email is made, the Patent Owner requests that the petitioner notify each counsel
`
`above by email that service is being made by another means at the time of service.
`
`IPR2017-01159
`
`PO Initial Mandatory Notices
`
`Page 6 of 7
`
`
`
`
`
`
`
`Date: 2017 Apr. 17
`
`Respectfully submitted,
`
`By: / M.C. Phillips /
`Matthew C. Phillips
`Registration No. 43,403
`Backup Counsel for Patent Owner
`
`IPR2017-01159
`
`PO Initial Mandatory Notices
`
`Page 7 of 7
`
`
`
`CERTIFICATE OF SERVICE
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`
`
`I hereby certify that on April 17, 2017, copies of the foregoing PATENT
`
`OWNER’S INITIAL MANDATORY NOTICES and all documents filed with it
`
`were served via electronic mail, as agreed to by counsel, upon the following
`
`counsel for the Petitioner:
`
`Elizabeth J. Holland: EHolland@goodwinlaw.com
`
`Cynthia Lambert Hardman: CHardman@goodwinlawcom
`
`
`
`/ M.C. Phillips /
`Matthew C. Phillips
`Registration No. 43,403
`
`
`IPR2017-01159
`
`PO Initial Mandatory Notices COS
`
`
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